Paper 20
`Trials@uspto.gov
`Date: May 13, 2022
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STRYKER CORPORATION and
`WRIGHT MEDICAL TECHNOLOGY, INC,
`Petitioner,
`v.
`OSTEOMED LLC,
`Patent Owner.
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
` IPR2021-01453 (Patent 10,245,085 B2)1
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, RICHARD H. MARSCHALL, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`MAJORS, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style of heading for subsequent papers.
`
`
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`INTRODUCTION
`I.
`With our authorization, Petitioner filed a Motion to Submit
`Supplemental Information (Paper 11, “Motion” or “Mot.”). Patent Owner
`filed an Opposition to the Motion (Paper 13, “Opposition” or “Opp.”). We
`also permitted Petitioner and Patent Owner to file, respectively, a Reply and
`Sur-Reply related to the Motion. Paper 17 (“Mot. Reply”); Paper 18 (“Mot.
`Sur-Reply”). The parties filed substantially similar motion papers in the
`other three related proceedings (IPR2021-01451, 1452, and 1453). In this
`Order, we cite the papers filed in IPR2021-01450 for convenience.
`II. BACKGROUND
`On March 11, 2022, we instituted inter partes review of claims 1–6,
`8–14, and 17 of U.S. Patent 8,529,608 B2 (“the ’608 patent”). Paper 6
`(“Institution Decision” or “Inst. Dec.”). The ’608 patent relates to a system
`for securing two bones together across a joint—specifically, a bone plate and
`related hardware, such as bone screws for fixing the plate to the relevant
`bones. Inst. Dec. 3–7. We instituted trial on all grounds in the Petition filed
`August 30, 2021. Id. at 41–42. Those grounds include, inter alia,
`Petitioner’s challenges to the claims as anticipated by the Slater or Faulkner
`references, and as obvious over a combination of the Arnould reference with
`Slater. Id. at 8.
`We instituted trial notwithstanding Patent Owner’s preliminary
`arguments that the challenged claims are not anticipated or obvious. Patent
`Owner argued, for example, that Slater failed to disclose a system for
`securing two discrete bones together across a joint, as recited in the
`challenged claims, and that the Arnould-Slater combination failed to
`
`2
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`disclose a transfixation screw hole disposed along the elongate spine of a
`bone plate, as also claimed. Paper 5, 11–14, 33–36. At the time of
`institution, Patent Owner had not submitted documentary or testimonial
`evidence in support of its arguments on the ’608 patent.
`About five months after the filing of the Petition in this case, Patent
`Owner filed petitions for inter partes review of certain of Petitioner’s
`(Stryker’s) patents that are at issue in related litigation between the parties,
`which litigation also involves the ’608 patent. Mot. 1–2. 2 Patent Owner’s
`petitions were filed on January 28, 2022, and rely on some of the same prior
`art asserted by Petitioner here, namely Slater and Arnould. Id. (citing filings
`in IPR2022-00487 and IPR2022-00488). In addition to the overlap of prior
`art, Petitioner contends there is subject-matter overlap with the parties’
`respective patents that are challenged—“both sets of patents are directed to
`bone plates for securing a first bone and a second bone together across a
`joint . . . and an angled hole that allows for a fixation member to extend
`through the first bone into the second bone.” Id. at 2–3. In support of its
`challenge to Petitioner’s patents, Patent Owner submitted testimony from
`Michael Sherman, a declarant retained by Patent Owner. Paper 12
`(attaching Proposed Exhibits 1022 and 1023 (the “Sherman Declarations”)).
`Whether the Sherman Declarations should be entered as supplemental
`information in this proceeding is the subject of this Motion.
`
`
`2 Petitioner contends its patents were asserted against Patent Owner in
`infringement counterclaims in a district court lawsuit pending in the
`Northern District of Illinois, and that Patent Owner identified Slater and
`Arnould in invalidity contentions served February 5, 2022. Mot. 1–2, n.3.
`
`3
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`III. ANALYSIS
`With prior authorization, a party may file a motion to submit
`supplemental information after trial has been instituted in accordance with
`the following requirements: (1) a request for the authorization to file a
`motion to submit supplemental information is made within one month of the
`date the trial has been instituted; and (2) the supplemental information must
`be relevant to a claim for which the trial has been instituted. 37 C.F.R.
`§ 42.123(a) (“Rule 123”). In short, the request for authorization must be
`timely, and the supplemental information relevant.
`Meeting those two requirements of Rule 123 does not, however,
`guarantee that a motion to submit supplemental information will be granted.
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed.
`Cir. 2015) (rejecting that “the PTAB must accept supplemental information
`if timely submitted and relevant”). The Board is also guided by, inter alia,
`the need to ensure efficient administration of the Office and the ability to
`complete IPR proceedings in a timely manner. Id. Moreover, “the PTAB
`has discretion to grant or deny motions as it sees fit.” Id. at 446–447 (citing
`37 C.F.R. § 42.5(a), (b)). And, we do not treat Rule 123 as offering a
`routine avenue for a petitioner to bolster deficiencies in a petition called out
`by patentee—it is not a “wait-and-see” opportunity to fix what could and
`should have been addressed when the petition was filed. Id. at 448 (citing
`Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23 at 4
`(PTAB Dec. 2, 2014)). The Board also sometimes cites prejudice to the
`non-moving party as a reason for denying submission of supplemental
`information. See, e.g., Polycom, Inc. v. DirectPacket Research, Inc.,
`
`4
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`IPR2019-01235, Paper 56 at 4 (PTAB Sept. 14, 2020) (“Petitioner has
`persuaded us that it would be prejudiced by introduction of [Patent Owner’s]
`new evidence and arguments at this late stage of the proceeding because
`Petitioner would not have an opportunity to respond.”).3
`As the moving party, Petitioner must persuade us that it is entitled to
`the requested relief. 37 C.F.R. § 42.20(c). Petitioner contends, with no
`dispute from Patent Owner, that it timely sought authorization to file this
`Motion. Mot. 3–4. We agree because Petitioner’s request for authorization
`was made within 30 days of our institution decision. See Ex. 3001 (email
`from Petitioner’s counsel dated April 5, 2022).
`Petitioner further argues that the Sherman Declarations are relevant to
`the instituted claims of the ’608 patent. Mot. 3–8. Petitioner contends that
`the declarations address the knowledge of a person of ordinary skill in the art
`(“POSA”) “during the same time period for the same technological field”
`and address “the same prior art references (Slater and Arnould) with respect
`to similar claim limitations.” Id. at 4. In both respects, Petitioner contends
`the Sherman Declarations contradict positions taken previously by Patent
`Owner related to the patentability of the ’608 patent’s claims, such as in
`Patent Owner’s Preliminary Response. Id. at 4–8. We discuss in detail
`below.
`
`
`3 In Polycom, the Board also considered the fact that Patent Owner had been
`aware and in possession of the supplemental information it sought to submit
`(certain standards documents) over a year before it filed its motion as
`evidenced by the filing of those documents in a related IPR between the
`same parties. Polycom, Paper 56 at 3–4.
`
`5
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`Petitioner contends that the Sherman Declarations repeatedly opine
`that a POSA “would understand that there are no practical differences
`between fusing a joint through arthrodesis and fusing a bone fracture”
`because “[a] [POSA] would know that bone plates configured for arthrodesis
`and bone plates configured to fuse bone fractures have been used
`interchangeably for decades.” Id. at 4–5 (quoting, with Petitioner’s
`emphasis, Proposed Ex. 1022 ¶ 164). Petitioner argues this opinion is
`relevant to its challenge to the claims based on Falkner and Patent Owner’s
`rebuttal thereto, which challenge cites Falkner’s allegedly interrelated
`teachings about plates for spanning both fractures and joints. Id. at 5; Mot.
`Reply 2 (“The Sherman Declarations make it more probable that the cited
`disclosures of Falkner relate equally to joint fusion as they do fracture repair,
`as argued by Stryker and as supported by [Petitioner’s declarant] Professor
`Gall.”). According to Petitioner, the cited portions of the Sherman
`Declarations are also inconsistent with Patent Owner’s earlier argument in
`this case, which “focused on alleged differences between fusing a joint and
`fixing a bone fracture.” Mot. 4–5.
`Moving to Slater and Arnould, Petitioner contends that the Sherman
`Declarations analyze those references, including the same embodiments
`addressed in Petitioner’s challenge, when applying those references against
`similar claim limitations in the Stryker patents challenged by Patent Owner.
`Id. at 6–7. Petitioner cites opinion in the Sherman Declarations detailing
`Slater’s teachings about a two-bone (tibia and talus) embodiment, which
`Patent Owner argued in the Preliminary Response was lacking in detail and
`did not meet the ’608 patent’s claim limitations requiring a plate for securing
`
`6
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`two discrete bones together across a joint. Id. (citing, for example, Proposed
`Ex. 1022 ¶¶ 59, 76, 81); Mot. Reply 2 (“[T]he Sherman Declarations make it
`more probable that Slater contemplates use of the plate for the fusion of two
`bones.”). For Arnould, Petitioner cites opinion in the Sherman Declarations
`that “Arnould clearly discloses a third hole located between said first hole
`and said second hole,” which testimony Petitioner contends supports its
`position that Arnould discloses a “transfixation screw hole disposed along
`the spine” as in the ’608 patent’s claims, and is allegedly inconsistent with
`Patent Owner’s argument to the contrary in this case. Mot. 7 (citing
`Proposed Ex. 1023 ¶ 264 (with Petitioner’s emphasis); Paper 5, 33–34);
`Mot. Reply 2–3.
`Patent Owner responds that the Sherman Declarations are irrelevant.
`Opp. 1–5. Patent Owner contends that the Sherman Declarations do not
`address Falkner and that Petitioner’s supplementation based on “the
`understanding of a [POSA] regarding bone plates is wholly irrelevant to an
`anticipation challenge.” Id. at 2–3 (asserting that Petitioner is simply
`attempting to use the supplemental evidence to “backfill flaws” in the
`Petition). Patent Owner contends that there is no inconsistency in Patent
`Owner’s positions about Slater. Id. at 3–4. According to Patent Owner, it
`has acknowledged that Slater discloses a two-bone embodiment and the
`Sherman Declarations rely on Slater as part of an obviousness theory, not
`anticipation. Id. (asserting that Petitioner’s proposed supplementation
`“potentially even asks this Board to modify its Slater grounds to be
`obviousness”). As for Arnould, Patent Owner contends that a screw hole
`located “between” two other holes is not the same thing as a transfixation
`
`7
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`screw hole being disposed along a plate’s spine as recited in claims of the
`’608 patent. Id. at 5 (noting differences in claim scope in the respective
`patents and that “[t]he concept that a hole be located between two holes is
`broader than the requirement here that the transfixation screw hole be
`disposed in a particular area of the plate.”). Thus, Patent Owner argues,
`there is no inconsistency in its positions on Arnould. Id.
`Patent Owner further argues that Petitioner’s motion lacks specificity
`about how Petitioner intends to use the supplemental information. Opp. 6.
`Patent Owner contends none of Petitioner’s cited authority allowed
`supplementing the record with testimony from a different expert, and that
`Mr. Sherman will not be testifying as an expert on Patent Owner’s behalf in
`this proceeding. Id. at 6–7. Lastly, Patent Owner contends it will be
`prejudiced if the Motion is granted. Id. at 7–8.
`Petitioner persuades us that the Sherman Declarations are relevant to
`claims for which trial has been instituted here. Patent Owner is correct that
`the Sherman Declarations do not analyze the Falkner reference, but Patent
`Owner’s argument that Mr. Sherman’s opinion on the perspective of a
`POSA being wholly irrelevant to Petitioner’s anticipation challenge is
`overstated. The POSA’s background knowledge and perspective is
`important even when anticipation is the issue. In re Graves, 69 F.3d 1147,
`1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the
`claimed invention ‘such that a skilled artisan could take its teachings in
`combination with his own knowledge of the particular art and be in
`possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936
`(CCPA 1962))). Mr. Sherman’s opinion about the lack of differences
`
`8
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`between fixing fractures and fusing bones across a joint appears to reflect
`the POSA’s understanding at about same time that the ’608 patent was filed,
`in the same general subject matter as the ’608 patent. In at least that respect,
`the Sherman Declarations are relevant to the instituted claims and
`Petitioner’s theory that a POSA would understand Falkner’s teachings as
`applying to bone plates usable for spanning a joint or fixing a fracture. We
`do not presently see this supplementation as Petitioner trying to change its
`theory from anticipation to obviousness, nor will we permit Petitioner to do
`so—the Petition asserts that Falkner anticipates the claims, and Petitioner is
`bound by that theory.
`The cited testimony about Slater in the Sherman Declarations is also
`relevant to the instituted claims here. That testimony is, at minimum,
`relevant to a POSA’s understanding of Slater’s disclosure of an embodiment
`where the plate is attached to only the tibia and talus, and to the sufficiency
`of that disclosure. Whether Mr. Sherman’s testimony is inconsistent with
`Patent Owner’s past argument on Slater is not something we must decide at
`this time or for this Motion. 4 What is important at this time, as discussed
`above, is that the testimony tends to support—and, thus, is relevant to—
`Petitioner’s and Dr. Gall’s position in the Petition that Slater discloses an
`embodiment where two (and only two) bones are involved in the fusion.
`
`
`4 Although Patent Owner contends it never denied that Slater includes a two-
`bone embodiment, Patent Owner also argued that Slater did not disclose
`claim 1’s preamble of a “system for securing two bones together across a
`joint between the two bones.” Paper 5, 11–14. Inconsistent or not, it is
`difficult to reconcile this aspect of Patent Owner’s argument with Patent
`Owner’s apparent admission about a two-bone embodiment in Slater.
`
`9
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`Compare Proposed Ex. 1022 ¶¶ 59, 81, with Paper 2, 14–15 (citing Ex. 1002
`¶ 102).
`The Sherman Declarations, at least insofar as they evidence a POSA’s
`understanding of some of the same embodiments and features of the Arnould
`bone plate relied on by Petitioner, are relevant to the instituted claims. The
`cited testimony of Mr. Sherman that Arnould’s through-hole is located
`“between” two other screw holes may support Petitioner’s interpretation of
`Arnould relative to the claims of the ’608 patent. Or, it may not, and may
`instead be consistent with Patent Owner’s assertion that the through-hole is
`disposed on a separate leg structure, and that being located “between” two
`features is not equivalent with being “disposed along the [elongate] spine” of
`the plate as claimed. Prelim. Resp. 33–36; Opp. 5; Mot. Sur-Reply 2–3.
`Either way, the testimony is relevant to a specific issue in dispute. Fed. R.
`Evid. 401 (providing that evidence is relevant if “it has a tendency to make a
`fact more or less probable than it would be without the evidence”)
`(emphasis added). We will decide such issue as appropriate on a full record.
`For the above reasons, we find that Petitioner has established that its
`request to submit supplemental information was timely, and that the
`information is relevant. We turn to Patent Owner’s remaining arguments.
`Patent Owner’s argument that Petitioner has not detailed how it
`intends to use the supplemental information is unavailing. Opp. 6; Mot. Sur-
`Reply 3 (“Petitioners have provided no clarity . . . leaving Patent Owner to
`decide, in the dark” whether and how to address the supplemental
`information moving forward). Petitioner’s position about how it intends to
`use the Sherman Declarations is reasonably clear, and that use follows with
`
`10
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`the relevance of Mr. Sherman’s cited testimony. As discussed above, it is
`apparent that Petitioner plans to cite the testimony as allegedly being
`consistent with an interchangeable use of bone plates for fixing fractures or
`fusing bones across joints, to reinforce Petitioner’s argument that Slater
`describes sufficiently a two-bone embodiment, and to argue Mr. Sherman’s
`interpretation of Arnould’s through-hole location is consistent with that
`location being disposed along the plate’s spine. 5 Patent Owner, thus, has
`reasonable notice and opportunity to address these issues in at least the
`Patent Owner Response and with documentary or testimonial evidence that
`Patent Owner is permitted to submit with that response.
`Patent Owner contends that several prior Board cases cited by
`Petitioner are distinguishable because each involved supplementing the
`record with testimony from expert witnesses that were already testifying in
`each individual case. Opp. 6. Even if Patent Owner’s characterization of
`those cases is accurate, 6 no authority is cited that would prevent this panel
`
`
`5 Some of Petitioner’s citations are, nevertheless, excessive (Mot. 6 (stating
`“see also Prop. Ex. 1022 at ¶¶86–188”)). An omnibus block citation to over
`one hundred paragraphs within the Sherman Declaration is not appropriate,
`and we did not attempt to read through all such paragraphs to determine
`what may or may not be relevant. We caution Petitioner against excessive,
`non-targeted cites in the future. The focus should be on discrete issues for
`which the Sherman Declarations are allegedly relevant and/or responsive.
`
` We also find that the Board’s decision in Intimidator, Inc. v. Bad Boy, Inc.,
`IPR2018-01632, Paper 29 at 3–4 (PTAB June 10, 2019) is instructive.
`There, although petitioner’s motion to submit supplemental information
`included testimony from Petitioner’s own, already-testifying expert, the
`supplemental evidence also included patentee’s own product manuals that
`were alleged to include disclosures that support petitioner’s obviousness
`
` 6
`
`11
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`from permitting supplementation with, as here, timely and relevant
`testimony of a patentee’s own declarant that such patentee submitted (and
`therefore endorsed) in a different case involving the same parties, prior art,
`and highly similar claim language. If Patent Owner opts to not present
`expert testimony from Mr. Sherman in this proceeding, that is Patent
`Owner’s choice. But it does not stop Petitioner from supplementing the
`record with timely and relevant evidence under Rule 123.
`Lastly, we do not agree that granting the Motion is unfairly prejudicial
`to Patent Owner. Opp. 7–8; Mot. Sur-Reply 3. It is early in this case and
`Patent Owner has ample opportunity to address the Sherman Declarations.
`It is also significant here that Petitioner did not withhold or take a “wait-and-
`see” approach with the Sherman Declarations. The Sherman Declarations
`were not available to Petitioner when the Petition was filed. Indeed, it seems
`the Sherman Declarations were in the exclusive possession of Patent Owner
`and Mr. Sherman until Patent Owner filed this testimony in IPR2022-00487
`and IPR2022-00488 a few weeks after Patent Owner filed its Preliminary
`Response in the present case. We see no prejudice in Patent Owner being
`confronted with the essentially contemporaneous testimony of its own
`retained expert from a proceeding involving the same parties (or their
`affiliates) and counsel, and involving identical prior art, substantially the
`same technical subject matter, and similar claim language in patents that are
`all asserted in the same pending lawsuit between the parties.
`
`
`theory and contradict patentee’s rebuttal in the preliminary response. The
`product manuals in that case are least analogous to the Sherman Declarations
`and the manner in which Petitioner seeks to use them here.
`
`12
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted;
`FURTHER ORDERED that Proposed Exhibits 1022 and 10237 will
`be entered as Exhibits 1022 and 1023 into the record of this proceeding; and
`FURTHER ORDERED that Petitioner must file Proposed Exhibits
`1022 and 1023 as numbered exhibits in this proceeding in accordance with
`this Order and within seven days of this Order.
`
`
`
`
`7 In IPR2021-01453, the corresponding exhibits are Proposed Exhibits 1025
`and 1026. IPR2021-01453, Paper 12. Notwithstanding the different
`numbering, this Order applies to those exhibits as well.
`
`13
`
`

`

`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`FOR PETITIONER:
`Sharon Hwang
`Robert Surrette
`Scott McBride
`McANDREWS, HELD & MALLOY LTD.
`shwang@mcandrews-ip.com
`bsurrette@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`FOR PATENT OWNER:
`Jason Engel
`Katherine Allor
`K&L GATES LLP
`Jason.engel.ptab@klgates.com
`Katy.allor@klgates.com
`
`
`14
`
`